T 1760/21 - Formed; deleting alternative is not admitted

Key points

• The opponents appeal the decision to reject the opposition. 
•  "The wording of claim 1 of the patent is as follows: "1. Method of obtaining a two- or three-dimensional formed structure of an AlMg alloy plate product, comprising the steps of: ...  shaping or forming said alloy plate at a temperature in a range of 200°C to 400°C". 
• "The point of debate is whether forming at a temperature in a range of 200°C to 400°C is directly and unambiguously derivable from the application as originally filed. Claim 1 of the application as originally filed relates to a forming method which includes shaping the alloy plate at a temperature in a range of 200°C to 400°C. "
• "The skilled person understands in that context that the meaning of the word "forming" is apparently broader than the expression "shaping". The forming process comprises the shaping step as part of it."
• "In view of the incoherent use of the terms "forming" "being formed" and "formed product" in the application as originally filed, there is ambiguity as to the intended meaning of "forming". Therefore it is not unambiguous that forming is supposed to be a synonym of shaping. Consequently the temperature range of 200°C to 400°C cannot be unambiguously associated with the forming step."
• "The step of "forming said alloy plate at a temperature in a range of 200°C to 400°C" is thus not directly and unambiguously derivable from the application as originally filed."
• In Auxiliary Request 10, "forming" is deleted as an alternative.
• "The request was submitted after the board's communication pursuant to Article 15(1) RPBA 2020, which indicated that Article 100(c) EPC, in combination with Article 123(2) EPC, appeared to prejudice the maintenance of the patent as granted."
• " In the communication pursuant to Article 15(1) RPBA 2020 the board argued why it regarded the objection under Article 100(c) EPC as persuasive. This was based only on arguments which had been part of the proceedings since the filing of the opposition. There were no new facts which would have triggered the filing of a new request at such a late stage of the proceedings. However, the fact that the appellants [opponents] did not repeat their arguments in the rejoinder, as argued by the respondent [proprietor], is irrelevant since the objection under Article 100(c) EPC had not been withdrawn and Article 100(c) EPC was part of the appeal proceedings. "
• The request is not admitted.
• The patent is revoked. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t211760eu1

3. Article 13(2) RPBA 2020

Under Article 13(2) RPBA 2020 any amendment to a party's appeal case made after notification of a summons to oral proceedings is, in principle, not to be taken into account unless there are exceptional circumstances, which have been justified with cogent reasons by the party concerned.

In the case in hand there are no exceptional circumstances, for the following reasons.

The request was submitted after the board's communication pursuant to Article 15(1) RPBA 2020, which indicated that Article 100(c) EPC, in combination with Article 123(2) EPC, appeared to prejudice the maintenance of the patent as granted.

The objection under Article 100(c) EPC concerning the forming at a temperature in a range of 200°C to 400°C was first raised in the notice of opposition (see point 5 bridging pages 12 and 13). This objection was part of the opposition proceedings and was dealt with by the opposition division under point 4.1 of the impugned decision. The objection was reiterated in point 2 of the appellants' grounds of appeal. With their reply to the appeal the respondent did not file any request that dealt with said objection. However, pursuant to Article 12(3) RPBA 2020, the reply has to contain a party's complete appeal case.

In the communication pursuant to Article 15(1) RPBA 2020 the board argued why it regarded the objection under Article 100(c) EPC as persuasive. This was based only on arguments which had been part of the proceedings since the filing of the opposition. There were no new facts which would have triggered the filing of a new request at such a late stage of the proceedings. However, the fact that the appellants did not repeat their arguments in the rejoinder, as argued by the respondent, is irrelevant since the objection under Article 100(c) EPC had not been withdrawn and Article 100(c) EPC was part of the appeal proceedings. The communication cannot per se be regarded as creating exceptional circumstances (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.4.5.6(c)).

Generally, patent proprietors have to anticipate that the board might evaluate a case differently from what they might have expected. Therefore the respondent should have reacted to all the appellants' objections immediately, even if they considered them to be completely without substance.

Furthermore, the communication pursuant to Article 15(1) RPBA 2020 is not an invitation to make new submissions (Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, V.A.4.5.6(a)).

Therefore, the tenth auxiliary request is not taken into account and is thus not part of the proceedings.